U.S. Appeals Court Rules on the Use of Trademarks in HTML Metatags

The U.S. Court of Appeals (7thCir) released its decision in Promatek v. Equitrac, a case involving the use of trademarks in HTML metatags. The case involved two companies, Promatek and Equitrac, whose systems enable professional firms, such as law firms or accounting firms, to automatically capture expenses related to a client and integrate them into the firm's billing system. Promatek is the owner of the trademark COPITRAK® and sells its products under that mark. Equitrac was using the word "Copitrack" in the metatags of its website, such that Equitrac's website was listed among Internet search results for "Copitrack". In affirming the lower court's decision, the Court of Appeal focused on the issue of confusion and stated: "the fact remains that there is a strong likelihood of consumer confusion as a result of its use of the Copitrack metatag. The degree of care exercised by consumers could lead to initial interest confusion. Initial interest confusion …. occurs when a customer is lured to a product by the similarity of the mark, even if the customer realizes the true source of the goods before the sale is consummated." In coming to its decision, the Court of Appeal relied on another similar case, Brookfield Communications v. West Coast Entertainment, which was decided by the U.S. Court of Appeals (9th Cir.) by stating that the "[i]n Brookfield Communications, the court found that although consumers are not confused when they reach a competitor's website, there is nevertheless initial interest confusion. ... This is true in this case, because by Equitrac's placing the term Copitrack in its metatag, consumers are diverted to its website and Equitrac reaps the goodwill Promatek developed in the COPITRAK mark. ... That consumers who are misled to Equitrac's website are only briefly confused is of little or no consequence…… What is important is not the duration of the confusion, it is the misappropriation of Promatek's goodwill. Equitrac cannot unring the bell. As the court in Brookfield explained, '[u]sing another's trademark in one's metatags is much like posting a sign with another's trademark in front of one's store.' ... Customers believing they are entering the first store rather than the second are still likely to mill around before they leave. The same theory is true for websites. Consumers who are directed to Equitrac's webpage are likely to learn more about Equitrac and its products before beginning a new search for Promatek and COPITRAK." For a copy of Promatek v. Equitrac, visit: http://www.ca7.uscourts.gov/op3.fwx?submit1=showop&caseno=00-4276.PDF For a copy of Brookfield Communications v. West Coast Entertainment, visit: http://makeashorterlink.com/?L54B32781